Navistar International Corporation v. EIJI TAKAHASHI
Claim Number: FA1604001672359
Complainant is Navistar International Corporation (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is EIJI TAKAHASHI (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <navistar.xyz>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2016; the Forum received payment on April 27, 2016.
On May 1, 2016, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <navistar.xyz> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@navistar.xyz. Also on May 4, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Operating under the name and mark NAVISTAR, Complainant, through its subsidiaries and affiliates, develops and markets trucks.
Complainant holds a registration for the NAVISTAR trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,498,530, registered August 2, 1988, since renewed.
Respondent registered the domain name <navistar.xyz> on April 11, 2016.
The domain name is substantively identical to Complainant’s NAVISTAR mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to make use of the NAVISTAR mark.
The domain name resolves to a page hosting pay-per-click links to the websites of some of Complainant’s commercial competitors.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business while commercially benefiting Respondent.
Respondent registered the domain name while knowing of Complainant’s rights in the NAVISTAR mark.
The domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Supported Language Request
Complainant requests, pursuant to UDRP Rule 11(a), that this administrative proceeding be conducted in the English language. Complainant makes this request notwithstanding that the language of the pertinent Registration Agreement is Japanese. To ensure fairness and justice to both parties, it is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the appropriate language of the proceeding. Relevant factors include: (a) WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, (b) the filing of a trademark registration with an entity which evinces an understanding of the English language, and (c) any evidence (or lack thereof) evincing Respondent’s understanding of the Japanese language included in the Registration Agreement. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (the panel there exercising discretion in deciding that a proceeding be conducted in English, contrary to the language of the Registration Agreement, based on evidence that respondent had command of the English language).
The Panel may also weigh the relative time and expense required to enforce a Japanese language agreement, which could result in prejudice to either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006), deciding that a proceeding should be conducted in English because:
It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
Complainant asserts that Respondent is capable of proceeding in English. In support of this assertion, Complainant cites the facts that Respondent has used Roman characters in the disputed domain name, that Respondent has an English language email address, and that the domain name resolves to an English language webpage. Respondent does not dispute any of this.
In light of these facts, and of the provisions of UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that Respondent is adequately conversant with the English language. We therefore determine that this proceeding shall be conducted in English.
(1) the domain name registered by Respondent is substantively identical, and therefore confusingly similar, to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the NAVISTAR trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Japan). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
To the same effect, see also Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <navistar.xyz> domain name is substantively identical, and therefore confusingly similar, to Complainant’s NAVISTAR trademark. The domain name contains the entire mark, with only the addition of the generic Top Level Domain (“gTLD”) “.xyz.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014). See also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Nat. Arb. Forum Jan. 22, 2016), finding, under Policy ¶ 4(a)(i), that the addition of a gTLD to the mark of another in creating a domain name is insufficient to distinguish that domain name from the mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <navistar.xyz> domain name, and that Respondent has no license or other authorization to use Complainant’s NAVISTAR mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “EIJI TAKAHASHI,” which does not resemble the domain name. On this record, we must conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See, for example, State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that, because the relevant WHOIS record identified the registrant of the domain name there in issue only as “Dale Anderson,” there was no basis for concluding that a UDRP respondent was commonly known by the <statefarmForum.com> domain name so as to have demonstrated that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <navistar.xyz> domain name to resolve to a website
that hosts links to other websites that compete with Complainant’s business, and that Respondent apparently profits from the operation of the resolving website. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <navistar.xyz> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii) this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015):
The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the <navistar.xyz> domain name, which is confusingly similar to Complainant’s NAVISTAR trademark, is an attempt to profit commercially from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in the registration and use of the domain name. See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
Finally, under this head of the Policy, it is apparent that Respondent knew of Complainant and its rights in the NAVISTAR mark when it registered the <navistar.xyz> domain name. This is a further demonstration of Respondent’s bad faith in registering the domain name. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum January 27, 2015) the panel there finding bad faith registration of a domain name where a UDRP “respondent must have had actual knowledge of the complainant and its rights in the … mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos.”
Therefore, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <navistar.xyz> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 27, 2016
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